patentology

15 May 2011

Opposition – request for extension of time to serve evidence in support – whether hospitalisation of supervising attorney constitutes a satisfactory explanation of delay – whether unavailability of expert witnesses over holiday period constitutes a satisfactory explanation of delay

'You know, Bill, there's such a thingas being too prompt and diligent!'

We have written previously on the difficulties faced by the Australian Patent Office in keeping opposition proceedings on-track, in view of the restraints imposed by the Federal Court on refusing requests for extensions of time under the current provisions (see Proceedings in Other Jurisdictions No Excuse for Delay).

Thus, although it is not mandatory to provide a satisfactory explanation in order to be granted an extension of time, it is generally necessary to provide some explanation for the delay. And, even though the Office may ultimately grant an extension, after taking all of the relevant factors into account, it may nonetheless clearly indicate that the explanation provided is unsatisfactory.

This decision by Delegate Greg Powell is a case in point. These types of decisions may take on more significance in the future, in providing guidance as to the circumstances in which it might be considered appropriate to grant extensions of time. IP Australia’s reform agenda includes making amendments to the Patents Regulations 1991which would prevent the grant of extensions of time in oppositions unless the Commissioner were satisfied that it is warranted in the circumstances (see IP Australia’s consultation paper Resolving Patent Opposition Proceedings Faster, pp. 12-13). This change would make the explanation for any delay the primary consideration in deciding whether or not to grant an extension of time.

BACKGROUND

New Zealand-based Autex Industries Limited had filed a Notice of Opposition to Australian patent application no. 2006201764, directed to a Fibre Panel, in the name of Australian company Woven Image Pty Limited. The service of evidence in support of the opposition was originally due on 7 October 2010.

Autex was granted two extensions of time, until 7 March 2011, within which to serve its evidence in support. On 2 March 2011, Autex filed an application for a further extension of time, from 7 March 2011 to 7 May 2011. The reasons given for requiring this extension of time were that:

a number of the potential witnesses were unavailable during the summer holiday period; and

the supervising attorney was in hospital in February 2011 undergoing a cardioversion, and was subsequently under doctor’s advice to avoid travel, which restricted his ability to supervise the collection of evidence.

Woven Image objected to the grant of this further extension. The Office determined that a hearing would not be required, and that a decision would be based on written submissions. Both parties made such submissions.

HOLIDAY PERIOD – NO EXCUSE

The Delegate was not satisfied that the holiday period provided a satisfactory explanation for delay in this case (at [15]):

Concerning locating witnesses, while it is often said that the Christmas/New Year holiday period slows down (or completely halts) contact with witnesses, as the applicant has pointed out, there were at least 5 months prior to this period in which the opponent could have located witnesses (assuming that they did not start to locate witnesses until after the Statement of Grounds and Particulars was served). Waiting to locate witnesses until a period of time which is notorious for witness non-availability does not suggest diligence and the delay in locating witnesses in this period would seem to be largely of the opponent’s own making.

HOSPITALISATION OF SUPERVISING ATTORNEY – NO EXCUSE

Although the Delegate was sympathetic to the situation of the supervising attorney, he was less so to the circumstances of the opponent’s representatives more generally (at [16]):

…I do not see how his absence could have caused a delay. As noted by the applicant, [another employee of the firm] was involved in collecting evidence. The opponent noted that this had occurred in the past while [the supervising attorney] was overseas. I have been given no reason why [the other employee] was incapable of continuing to collect evidence…. Furthermore, while [the supervising attorney] may have been under doctor’s orders not to travel after he was discharged from hospital, I do not see how this could have prevented him … from having contact with his witnesses. There are other means of communication available besides travelling to meet the witness in person. Given these actions of the opponent (or their attorneys) the delay would, again, seem to be of the opponent’s own making.

COMMENT

The extension was granted in this case, after weighing up the other considerations required according to Federal Court precedent (not least being the fact that the opponent’s evidence had, by the time of the decision, been served).

However, all practitioners operating in Australia should take heed of this decision, and others like it. IP Australia only needs to have the Regulations amended to achieve its objectives in terms of limiting the availability of extensions of time. In seeking to do so, it has expressly stated that:

the party seeking the extension would bear the onus of convincing the Commissioner that it is justified; and

in applying the test, a party would not be able to obtain an extension as a result of delays caused by an agent or a legal representative such as a patent attorney or legal practitioner – all such persons would be expected to act promptly and diligently at all times.

A sole practitioner might be afforded more leeway in the event of illness, or other unavoidable unavailability. However, firms of practitioners will need to ensure that attorneys supervising oppositions are covered for absences (expected or otherwise), to ensure that the firm, as a whole, acts ‘promptly and diligently’.

For those of us in practice, who know the pressures associated with managing (perhaps) dozens of ongoing cases simultaneously, this is a somewhat disconcerting prospect. But it is likely that this is the brave new world which we will face in the not-too-distant future, so we had better start getting used to the idea!